Judgments nº T-292/08 of The General Court, September 13, 2010

• Resolution Date: September 13, 2010
• Issuing Organization: The General Court
• Decision Number: T-292/08

In Case T‑292/08,

Industria de Diseño Textil (Inditex), SA, established in Arteixo (Spain), represented by E. Armijo Chávarri and A. Castán Pérez‑Gómez, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by O. Mondéjar Ortuño, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Roberto Fernando Marín Díaz de Cerio, residing in Logroño (Spain),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 24 April 2008 (Case R 484/2007‑2), relating to opposition proceedings between Roberto Fernando Marín Díaz de Cerio and Industria de Diseño Textil (Inditex), SA,

THE GENERAL COURT (Sixth Chamber),

composed of A.W.H. Meij, President, V. Vadapalas (Rapporteur) and L. Truchot, Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Registry of the General Court on 23 July 2008,

having regard to the response lodged at the Court Registry on 7 November 2008,

further to the hearing on 12 February 2010,

gives the following

Judgment

Background to the dispute

1 On 5 August 2002, the applicant, Industria de Diseño Textil (Inditex), SA, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The mark in respect of which registration was sought is the word mark OFTEN.

3 The goods for which registration was sought fall within, inter alia, Class 14 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments; ornamental pins; tie-pins; needle cases of precious metal; napkin rings of precious metal; works of art of precious metal; novelty key rings; medals; coins; gold and silver ware (other than cutlery, forks and spoons); badges of precious metal; shoe and hat ornaments of precious metal; ashtrays of precious metal; cuff links’.

4 The application for registration of the Community trade mark was published in Community Trade Marks Bulletin No 31/2004 of 2 August 2004.

5 On 26 October 2004, Mr Roberto Fernando Marín Díaz de Cerio filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the following three Spanish marks:

– the word mark OLTEN, registered on 5 September 1988 (No 1182270) in respect of goods falling within Class 14;

– the figurative mark, registered on 5 March 1990 (No 1293560) in respect of goods falling within Class 14, reproduced below:

– the figurative mark, registered on 20 November 2002 (No 2460666) in respect of goods falling within Class 14, reproduced below:

7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

8 By letter of 2 September 2005, the applicant requested that Mr Marín Díaz de Cerio furnish proof of genuine use of the earlier marks, in accordance with Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009).

9 On 2 February 2007, the Opposition Division upheld the opposition in part, as regards the following goods falling within Class 14: ‘Goods in [precious metals and their alloys] or coated therewith, not included in other classes; jewellery; horological and chronometric instruments; ornamental pins; tie-pins; novelty key rings; medals; badges of precious metal; shoe and hat ornaments of precious metal; cuff links’. It held, inter alia, that the genuine use of the earlier mark OLTEN had been proven as regards ‘watches’ falling within Class 14 and that there was a likelihood of confusion, as regards the goods at issue, between the trade mark applied for and that earlier mark.

10 On 28 March 2007, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision. In that appeal, it challenged the Opposition Division’s assessment as regards the similarity of the trade marks at issue and the existence of a likelihood of confusion.

11 By decision of 24 April 2008 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. Specifically, it held that, given the similarity of the goods at issue and the high degree of visual and phonetic similarity between the trade mark applied for and the earlier mark OLTEN, there could be a likelihood of confusion between those marks on the part of the Spanish public concerned.

Procedure and forms of order sought

12 The applicant claims that the Court should annul the contested decision in respect of all or part of the goods for which registration was refused.

13 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

14 Since Judge Tchipev was prevented from sitting after the oral procedure was closed, Judge Truchot was designated to complete the Chamber, in accordance with Article 32(3) of the Court’s Rules of Procedure.

15 By order of 5 July 2010, the Court (Sixth Chamber), in its new composition, reopened the oral procedure and the parties were informed that they could present oral argument at a further hearing on 6 September 2010.

16 By letters of 9 and 15 July 2010 respectively, the applicant and OHIM notified the Court that they waived their right to present again oral argument. The other party to the proceedings before the Board of Appeal of OHIM did not reply to the Court’s invitation to appear before it.

17 Consequently, the President of the Sixth Chamber decided to close the oral procedure.

Law

18 In support of its action, the applicant puts forward three pleas alleging, first, infringement of Articles 61 and 62 of Regulation No 40/94 (now Articles 63 and 64 of Regulation No 207/2009), secondly, infringement of Article 43(2) of that regulation and, thirdly, infringement of Article 8(1)(b) of that regulation.

The first plea, alleging infringement of Articles 61 and 62 of Regulation No 40/94

Arguments of the parties

19 The applicant claims that the Board of Appeal infringed Articles 61 and 62 of Regulation No 40/94 by failing to examine the issues, first, of the proof of genuine use of the earlier mark OLTEN and, secondly, of the similarity of the goods at issue. Those two issues were debated before the Opposition Division, the applicant having maintained, first, that the use of the earlier mark OLTEN had not been proven and, secondly, that the goods at issue, with the exception of horological instruments, were different.

20 According to the applicant, pursuant to the principle of continuity of functions between the various departments of OHIM, the Board of Appeal was required to examine those issues, even though they were not raised before it. The grounds set out in paragraph 26 of the contested decision are insufficient in this respect.

21 OHIM disputes the applicant’s arguments.

Findings of the Court

22 Under Article 61(1) of Regulation No 40/94 (now Article 63(1) of Regulation No 207/2009), if an appeal is admissible, the Board of Appeal is to examine whether it is allowable.

23 Under Article 62(1) of that regulation (Article 62(1) having become Article 64(1) of Regulation No 207/2009), following the examination as to its allowability, the Board of Appeal is to decide on the appeal and it may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

24 It must be observed, as a preliminary point, that while the applicant refers, in its application, to Article 62(2) of Regulation No 40/94, it is apparent from its arguments, and from information provided at the hearing, that it is in fact relying on paragraph 1 of that article.

25 It follows from that provision that, through the effect...